Basics

FAQ

Patent trolls, commonly referred to as “non-practicing entities” (NPEsNon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More) or more accurate as “patent assertion entities” (PAEs), assert patents against companies that have inadvertently incorporated patented technology into their products. Although trolls are sometimes the original inventor or applicant for the patent, they usually acquire patents through a subsequent transaction. Since trolls generally do not produce or sell anything, they are not at risk of infringing other patents, allowing them to assert patents aggressively without fear of retaliation. Often defendants, especially smaller companies and startups, will choose to settle to avoid expending time and resources on costly litigation.
A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it.
A narrower term for trolls that focuses on the core business model rather than whether the entity is actually making use of the patented technology (“working the patent”). As their name implies, they generate revenue from asserting their patents to obtain licensing fees, settlements or court-mandated damages.
Privateering is a recent development in which large companies work with trolls, explicitly or implicitly, to attack their rivals. In one common form, companies license patents to allies, retain a license for themselves, and then sell the patents to trolls who can use them to attack unlicensed third-parties. Unlike the company that originally owned the patents, the trollAn entity in the business of being infringed — by analogy to the mythological troll that exacted payments from the unwary. Cf. NPE, PAE, PME. See Reitzig and Henkel, Patent Trolls, the Sustainability of ‘Locking-in-to-Extort’ Strategies, and Implications for Innovating Firms. can go after that company’s rivals full force without fear of retaliation or reputational damage. A variation on privateering includes spinning patents off into shell companies that become patent assertion entities.
The Federal CircuitSee CAFC is short for the Court of Appeals for the Federal Circuit, also abbreviated CAFCThe U.S. Court of Appeals for the Federal Circuit, commonly referred to as ‘the Federal Circuit.’ The appellate court that has exclusive jurisdiction over patent appeals from district courts as well as the USPTO. The Federal Circuit was established in 1982 to regularize patent law across the country but has often been criticized for what many perceive as an applicant/patentee. The Federal CircuitSee CAFC is a specialized appeals court that hears all appeals of federal district court decisions on patent litigation. Traditionally, when a district court case is appealed, it moves up to the regional circuit court that has appellate jurisdiction over the district court. The Federal CircuitSee CAFC was intended to make patent law more uniform, but it became a “booster of its specialty,” making patents easier to get, easier to assert, harder to invalidate, and available for abstract subject matter.
The International Trade Commission (ITC) is an independent, quasi-judicial federal agency that has the power to block imports into the United States for “unfair trade practices,” including patent infringement. Through the ITCInternational Trade Commission, it is possible to get an exclusion orderAn order issued by the U.S. ITC as a result of a 337 action, excluding from entry into the United States goods found to infringe a U.S. patent. as a result of a 337 action, which permits patent owners to exclude from entry into the United States goods found to infringe a U.S. patent. Following the Supreme Court’s 2006 eBay decision, which made injunctions–particularly for non-producing entities–more difficult to obtain in patent infringement cases before the federal courts, the ITC has seen a marked increase in patent infringement complaints. With an average case length between 12 and 15 months, ITCInternational Trade Commission cases are usually resolved more quickly than district court cases, but the ITCInternational Trade Commission cannot award damages. Once the Administrative Law Judge (ALJ) rules on a case, following a recommendation by ITCInternational Trade Commission staff, the ITC’s six commissioners vote on whether to uphold or reverse the ALJ’s decision. Following the ITCInternational Trade Commission decision, the president has 60 days to override the ITC’s order. If the president does not act within 60 days, the ITC’s import ban takes effect.
UtilityAn invention must useful to be patentable. Very few inventions are invalidated as lacking utility. Perpetual motion machines, for example, are typically found invalid for lacking utility. patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Business method and software patents are utilityAn invention must useful to be patentable. Very few inventions are invalidated as lacking utility. Perpetual motion machines, for example, are typically found invalid for lacking utility. patents.

Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. Design patents do not overlap with utilityAn invention must useful to be patentable. Very few inventions are invalidated as lacking utility. Perpetual motion machines, for example, are typically found invalid for lacking utility. patents; they are expressly limited from applying to any functional characteristic or attribute. A design patentAs distinct from a utility patent. A design patent protects only the ornamental design or appearance of an article of manufacture, but not its structural or functional features. An ‘article of manufacture’ is a broad term which may extend even to computer icons. Like utility patents, design patents must be nonobvious but this standard is harder to apply to designs. may only protect ornamental, non-functional qualities. Smartphones may be covered by design patents in addition to utilityAn invention must useful to be patentable. Very few inventions are invalidated as lacking utility. Perpetual motion machines, for example, are typically found invalid for lacking utility. patents.

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Patent Dictionary

Term	Definition
337 action	A type of administrative litigation which occurs before the U.S. International Trade Commission (ITCInternational Trade Commission). Under Section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), the ITCInternational Trade Commission is empowered to prohibit the importation of products that infringe a valid and enforceable U.S. patent. 337 actions can be invoked by any domestic industry, including firms that merely license patents.

337 action

A type of administrative litigation which occurs before the U.S. International Trade Commission (). Under Section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), the is empowered to prohibit the importation of products that infringe a valid and enforceable U.S. patent. 337 actions can be invoked by any domestic industry, including firms that merely license patents.

Term	Definition
abstract idea	Abstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010.
[patent] agent	A non-attorney authorized to act for or on behalf of a patent applicant. Patent agents must be registered with the USPTOUnited States Patent and Trademark Office. See also PTO..
aggregator	An entity that acquires patents for strategic purposes as distinct from protecting a line of business. Aggregators often license patents nonexclusively to shareholders or other insiders, and then sell the patents to patent assertion entities (PAEs) to monetize.
AIA	America Invents Act of 2011. AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant reviewA procedure by which a third-party may contest issuance of a patent at the USPTO within a short period (9 months) after issuance. Introduced to the U.S. by the AIA. The EPO has a similar procedure. proceeding.
AIPA	American Inventors Protection Act of 1999. The AIPAAmerican Inventors Protection Act of 1999. The AIPA made minor changes to patent law, including requiring publication of most patent applications after 18 months and promoting the USPTO Director to Under Secretary of Commerce for Intellectual Property. made minor changes to patent law, including requiring publicationThe term applied when a patent application or issued patent is made public. Normally required 18 months after filing. A feature unique to the U.S. patent system allows patent applicants who limit their application solely to the United States to delay publication until the patent is issued by the USPTO. of most patent applications after 18 months and promoting the USPTOUnited States Patent and Trademark Office. See also PTO. Director to Under Secretary of Commerce for Intellectual Property.
AIPLA	American Intellectual Property Law Association, formerly the American Patent Law Association. DC-based professional organization that represents the interests of the intellectual property community, including the patent bar.
APJ	Administrative Patent Judge. APJs serve on the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA..
assign	To permanently transfer rights to a patent application or patent, as distinguished from a license. Unlike licenses, assignments may be recorded with the USPTOUnited States Patent and Trademark Office. See also PTO., although approximately one half of all assignments go unrecorded in practice, which has fueled opacity problems in the patent system.

Term	Definition
best mode	A rule that the patentee must disclose to the public the best known mode of implementing the invention. After the America Invents Act of 2011 (AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding.), the failure to disclose the ‘best mode’ is no longer grounds for invalidating a patent, so the requirement is viewed as toothless.
BPAI	See PTAB
business method patent	While not formally defined, “methods of doing business” were excluded from patentability by judicial rule prior to the 1998 State Street decision. Business method patents have been subject to extensive criticism and have been subject to special scrutiny by the USPTOUnited States Patent and Trademark Office. See also PTO. (through a so-called “second pairPatent Application Information Retrieval System. The USPTO's electronic system for storing and accessing information regarding a patent. There is a public version for searching file wrappers. of eyes” review) and now under a transitional review procedure established by the AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding.. Business methods remain unpatentable in most of the world on the grounds that they are not technology.

Term	Definition
CAFC	The U.S. Court of Appeals for the Federal CircuitSee CAFC, commonly referred to as ‘the Federal CircuitSee CAFC.’ The appellate court that has exclusive jurisdiction over patent appeals from district courts as well as the USPTOUnited States Patent and Trademark Office. See also PTO.. The Federal CircuitSee CAFC was established in 1982 to regularize patent law across the country but has often been criticized for what many perceive as an applicant/patentee friendly bias — especially during its first two decades when its decisions were rarely reviewed by the Supreme Court. (Also, “Fed Cir”)
carrot licensing	Ex ante licensing. See ex post licensingLicensing demanded after the technology has been independently developed and implemented, also known as stick licensing since it is entered under threat of patent litigation. Distinguished from ex ante or carrot licensing where the technology is knowingly and voluntarily licensed in advance..
CFR	Code of Federal Regulations. Unlike most federal agencies, the USPTOUnited States Patent and Trademark Office. See also PTO. lacks the power to promulgate substantive regulations (interpretations of basic patent law); however, it issues regulations on its administrative procedures.
claim construction	See Markman hearing
classification	All patents are categorized into areas of technology with a system of classes and subclasses established by the USPTOUnited States Patent and Trademark Office. See also PTO..
combination patent	A patent for an claimed invention whose contribution to the art is to combine two existing, possible known components in a new way. The Supreme Court decision in KSR Int’l v. Teleflex concerned the standard needed to show that a combination was obvious.
covered business method (CBM) review	A covered business method review is an adversarial procedure created by the AIA for challenging patents, similar to an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. Like an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected., the parties argue before an Administrative Patent Judge, not a patent examiner and the challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. Unlike an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected., a CBM can challenge a patent not just as invalid due to prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed., but also as invalid because it’s an abstract idea or because it fails to adequately define or describe the invention under 35 U.S.C. § 112. A CBM can only be filed against financial product/service patents that do not include a technical invention, while an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. can be filed against any patent.
continuation	A second application for the same invention claimed in a prior nonprovisional application and filed before the first application becomes abandoned or granted. Continuations are unique to the U.S. and are criticized for giving applicants endless opportunity to wear down patent examiners. See Lemley and Moore, Ending the Abuse of ContinuationA second application for the same invention claimed in a prior nonprovisional application and filed before the first application becomes abandoned or granted. Continuations are unique to the U.S. and are criticized for giving applicants endless opportunity to wear down patent examiners. See Lemley and Moore, Ending the Abuse of Continuation Practice. Practice.

Term	Definition
DOC	Department of Commerce. The parent agency of the USPTOUnited States Patent and Trademark Office. See also PTO..
doctrine of equivalents	The principle that patent infringement occurs even when the allegedly infringing activity falls outside the literal scope of the patent claims, but its elements are identical or equivalent to each claimed element of the patented invention.
declaratory judgment	A lawsuit in which one party asks the court to resolve an issue and declare its judgment. In patent litigation, a company that thinks it may be accused of infringing may choose to file a declaratory judgmentA lawsuit in which one party asks the court to resolve an issue and declare its judgment. In patent litigation, a company that thinks it may be accused of infringing may choose to file a declaratory judgment action, asking the court to declare that the patent is not infringed and/or invalid. Filing a declaratory judgment can have tactical, procedural, or action, asking the court to declare that the patent is not infringed and/or invalid. Filing a declaratory judgmentA lawsuit in which one party asks the court to resolve an issue and declare its judgment. In patent litigation, a company that thinks it may be accused of infringing may choose to file a declaratory judgment action, asking the court to declare that the patent is not infringed and/or invalid. Filing a declaratory judgment can have tactical, procedural, or can have tactical, procedural, or financial benefits over just waiting to be sued.
defensive publication	PublicationThe term applied when a patent application or issued patent is made public. Normally required 18 months after filing. A feature unique to the U.S. patent system allows patent applicants who limit their application solely to the United States to delay publication until the patent is issued by the USPTO. of an invention done to ensure that no one can patent it, since it becomes prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. when it becomes public. Also called “defensive disclosureOne of the primary objectives of the patent system. In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought. Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection..”
dependent claim	A claim that refers back to (depends on) and further limits a preceding dependent or independent claimA claim that does not refer back to or depend on another claim. See dependent claim.. A patent typically only states a few independent claims, but many dependent claims which are narrower than the independent claimA claim that does not refer back to or depend on another claim. See dependent claim. that they reference. The narrower the claim, the more likely it is to be valid against prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed., but the less likely it is to be infringed.
design patent	As distinct from a utility patentAs distinguished from design patents and plant patents. Generally, references to 'patents' are to utility patents.. A design patentAs distinct from a utility patent. A design patent protects only the ornamental design or appearance of an article of manufacture, but not its structural or functional features. An ‘article of manufacture’ is a broad term which may extend even to computer icons. Like utility patents, design patents must be nonobvious but this standard is harder to apply to designs. protects only the ornamental design or appearance of an article of manufacture, but not its structural or functional features. An ‘article of manufacture’ is a broad term which may extend even to computer icons. Like utilityAn invention must useful to be patentable. Very few inventions are invalidated as lacking utility. Perpetual motion machines, for example, are typically found invalid for lacking utility. patents, design patents must be nonobvious but this standard is harder to apply to designs.
direct infringement	As distinct from indirect infringementAs distinct from direct infringement. A person indirectly infringes a patent if she either contributes to or induces someone else to directly infringe the patent. Contributory infringement means that the indirect infringer knew about the patent and essentially provided some key piece of the infringing product that doesn't have any other purpose. Induced infringement means that the indirect infringer induced someone. A person directly infringes a patent if she actually performs all of the steps of at least one method claim of the patent; or sells, manufacture, uses, or imports a product that contains all of the elements of at least one system or apparatus claim of the patent. The direct infringer is the one who actually infringes a patent.
disclosure	One of the primary objectives of the patent system. In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought. Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection.
divisional application	A later application for an independent or distinct invention disclosing and claiming (only a portion of and) only subject matter disclosed in the earlier or parent applicationThe term "parent" is applied to an earlier application of the inventor disclosing a given invention. See continuation..

Term	Definition
EPO	European Patent Office, which is the operating arm of the European Patent Organisation (also EPOEuropean Patent Office, which is the operating arm of the European Patent Organisation (also EPO), which is an independent treaty organisation that is not part of the European Union, although there is a substantial overlap in membership.), which is an independent treaty organisation that is not part of the European Union, although there is a substantial overlap in membership.
evergreening	A collection of techniques used by patent owners to extend the life of their patents past the ordinary lifespan.
ex parte	A Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process.
ex post licensing	Licensing demanded after the technology has been independently developed and implemented, also known as stick licensingSee ex post licensing since it is entered under threat of patent litigation. Distinguished from ex ante or carrot licensingEx ante licensing. See ex post licensing. where the technology is knowingly and voluntarily licensed in advance.
exclusion order	An order issued by the U.S. ITC as a result of a 337 actionA type of administrative litigation which occurs before the U.S. International Trade Commission (ITC). Under Section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), the ITC is empowered to prohibit the importation of products that infringe a valid and enforceable U.S. patent. 337 actions can be invoked by any domestic industry, including firms that merely license patents. More, excluding from entry into the United States goods found to infringe a U.S. patent.

Term	Definition
Fed. Reg.	The Federal Register. The chronologically ordered gazette of the United States, cataloguing public notices and advisories, proposed and final rules and regulations, and requests for information and comment by the various organs of the Federal Government. Also abbreviated “FRFederal Register. See Fed. Reg..”
Federal Circuit	See CAFC
file wrapper	The actual USPTOUnited States Patent and Trademark Office. See also PTO. folder into which documents pertaining to the prosecutionPatent prosecution is the process of applying for a patent, along with any further proceedings before the USPTO. of a particular patent application are deposited, including correspondence between the applicant and the USPTOUnited States Patent and Trademark Office. See also PTO., bibliographic information, paper filings, and office actions. The USPTOUnited States Patent and Trademark Office. See also PTO. file wrapperThe actual USPTO folder into which documents pertaining to the prosecution of a particular patent application are deposited, including correspondence between the applicant and the USPTO, bibliographic information, paper filings, and office actions. The USPTO file wrapper system has transitioned to electronic form, and much of this information is now available electronically through the USPTO's public PAIR. system has transitioned to electronic form, and much of this information is now available electronically through the USPTO’s public PAIRPatent Application Information Retrieval System. The USPTO's electronic system for storing and accessing information regarding a patent. There is a public version for searching file wrappers..
final office action (rejection)	An Office action on the second or any subsequent examination or consideration by an examiner that is intended to close the prosecutionPatent prosecution is the process of applying for a patent, along with any further proceedings before the USPTO. of a patent application. However, in practice, a rejection is not conclusive; see continuationA second application for the same invention claimed in a prior nonprovisional application and filed before the first application becomes abandoned or granted. Continuations are unique to the U.S. and are criticized for giving applicants endless opportunity to wear down patent examiners. See Lemley and Moore, Ending the Abuse of Continuation Practice..
forum shopping	The practice, by plaintiffs, of picking the most favorable court to file a lawsuit in.
FR	Federal Register. See Fed. Reg.
FRAND	“Fair, Reasonable, and Non-Discriminatory” licensing. A licensing commitment made for standard-essential patents in the context of technology standard setting activities. See also RANDReasonable and Non-Discriminatory. See FRAND..
FRCP	The Federal Rules of Civil Procedure. These are the rules that govern all civil cases in federal courts, including patent infringement cases.
FTC	U.S. Federal Trade Commission. An independent regulatory agency charged with consumer protection and competition policy, which conducted several influential studies on how patents work in practice. Authored several key studies: 2003’s To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy [PDF] and 2011’s The Evolving IP Marketplace: Aligning Patent Notice and Remedies with Competition [PDF].

Term	Definition
Holdup	An attempt by a patent owner, by threatening litigation, disproportionate damages, or injunction/exclusion of a product, to extract payment from a producing company greater than the value of the patented technology.

Term	Definition
ICT	Information and Communications Technology. Similar to “IT” (information technology) but explicitly includes telecommunications technologies as well as computing.
IFW	Image File WrapperThe actual USPTO folder into which documents pertaining to the prosecution of a particular patent application are deposited, including correspondence between the applicant and the USPTO, bibliographic information, paper filings, and office actions. The USPTO file wrapper system has transitioned to electronic form, and much of this information is now available electronically through the USPTO's public PAIR.. The electronic version of a patent application’s file wrapperThe actual USPTO folder into which documents pertaining to the prosecution of a particular patent application are deposited, including correspondence between the applicant and the USPTO, bibliographic information, paper filings, and office actions. The USPTO file wrapper system has transitioned to electronic form, and much of this information is now available electronically through the USPTO's public PAIR..
independent claim	A claim that does not refer back to or depend on another claim. See dependent claimA claim that refers back to (depends on) and further limits a preceding dependent or independent claim. A patent typically only states a few independent claims, but many dependent claims which are narrower than the independent claim that they reference. The narrower the claim, the more likely it is to be valid against prior art, but the less likely it.
indirect infringement	As distinct from direct infringementAs distinct from indirect infringement. A person directly infringes a patent if she actually performs all of the steps of at least one method claim of the patent; or sells, manufacture, uses, or imports a product that contains all of the elements of at least one system or apparatus claim of the patent. The direct infringer is the one who actually. A person indirectly infringes a patent if she either contributes to or induces someone else to directly infringe the patent. Contributory infringement means that the indirect infringer knew about the patent and essentially provided some key piece of the infringing product that doesn’t have any other purpose. Induced infringement means that the indirect infringer induced someone to infringe the patent and knew that the actions she induced would be direct infringementAs distinct from indirect infringement. A person directly infringes a patent if she actually performs all of the steps of at least one method claim of the patent; or sells, manufacture, uses, or imports a product that contains all of the elements of at least one system or apparatus claim of the patent. The direct infringer is the one who actually.
Intellectual Ventures	The largest patent aggregatorAn entity that acquires patents for strategic purposes as distinct from protecting a line of business. Aggregators often license patents nonexclusively to shareholders or other insiders, and then sell the patents to patent assertion entities (PAEs) to monetize. More, currently holding around 40,000 patents. Closely associated with co-founder Nathan Myhrvold. IV is often viewed as a patent assertion entity, although much of its activities are conducted through spinoffs, and the company is at least nominally in the business of producing inventions in-house. See our posts on Intellectual VenturesThe largest patent aggregator, currently holding around 40,000 patents. Closely associated with co-founder Nathan Myhrvold. IV is often viewed as a patent assertion entity, although much of its activities are conducted through spinoffs, and the company is at least nominally in the business of producing inventions in-house. See our posts on Intellectual Ventures..
inter partes reexamination	An adversarial reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new procedure for challenging an issued patent. Like ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new, the procedure is before patent examiners, whose decisions can be reviewed by the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.. The AIA replaced this with inter partes review . See also reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new.
inter partes review	An adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review.
interference	A proceeding, formerly conducted before the USPTOUnited States Patent and Trademark Office. See also PTO. Board of Patent Appeals and Interferences, to determine priority of invention between applications that appear to cover the same invention. Interferences occurred under the first-to-invent system that was changed to first-inventor-to-file by the America Invents Act of 2011.
international application	An application filed under the Patent Cooperation Treaty (PCTPatent Cooperation Treaty, a treaty administered by WIPO. See international application.). This establishes global priority among applications, but there is no such thing as an international patent.

Term	Definition
JPO	Japan Patent Office

Term	Definition
Markman hearing	A hearing before the judge to determine the meaning of words in the patent claims. (The hearing is named for Markman v. Westview Instruments. This determination is known as “claim constructionSee Markman hearing.” Claim constructionSee Markman hearing is critical to defining the scope of a patent so that validity and infringement can be determined. Claim constructionSee Markman hearing is reviewed by the Federal Circuit de novo (that is, without deference to the district court). As a result, district court claim constructionSee Markman hearing decisions are reversed by the Federal CircuitSee CAFC 30-40% of the time.
MPEP	USPTO’s Manual of Patent Examining Procedure.
MAD	Mutually Assured Destruction. A Cold War-era metaphor used in the context of patent practice to refer to the possibility that any assertion of patents by one business entity against another will be countered with assertions of patents held by the original defendant.
maintenance fees	Fees for maintaining in force a patent based on an application filed on or after December 12, 1980. See MPEPUSPTO's Manual of Patent Examining Procedure. 2500 for more.

Term	Definition
non-obviousness	A requirement for patentability based on 35 U.S.C. § 103 of the Patent Act. An invention cannot be an obvious variant of something that is already known, that is, the invention must not be obvious to a “person having ordinary skill in the art” (PHOSITA"Person Having Ordinary Skill in the Art". See non-obviousness.). Also known as an “inventive step” outside the United States.
novelty	A requirement for patentability, based on 35 U.S.C. § 102(a) of the Patent Act. An invention cannot have been disclosed, offered for sale, or used publicly more than a year before seeking a patent.
NPE	Non-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it.

Term	Definition
post-grant review	A procedure by which a third-party may contest issuance of a patent at the USPTOUnited States Patent and Trademark Office. See also PTO. within a short period (9 months) after issuance. Introduced to the U.S. by the AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding.. The EPO has a similar procedure.
publication	The term applied when a patent application or issued patent is made public. Normally required 18 months after filing. A feature unique to the U.S. patent system allows patent applicants who limit their application solely to the United States to delay publicationThe term applied when a patent application or issued patent is made public. Normally required 18 months after filing. A feature unique to the U.S. patent system allows patent applicants who limit their application solely to the United States to delay publication until the patent is issued by the USPTO. until the patent is issued by the USPTOUnited States Patent and Trademark Office. See also PTO..
PTO	Patent and Trademark Office, informally used interchangeably with USPTOUnited States Patent and Trademark Office. See also PTO..
PTAB	Patent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAISee PTAB) before the AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding..
provisional patent application	An application for patent filed in the USPTOUnited States Patent and Trademark Office. See also PTO. under 35 U.S.C. § 111(b) that allows filing without a formal patent claimThe section of a patent that describes the legal scope of the invention. Patent claims are supposed to establish the boundaries of the patentee’s entitlement to exclude. Under peripheral claiming as practiced in the U.S., claims establish the outer bounds of the patentee's privilege to exclude others. For further reading, see Burk and Lemley, Signposts or Fence Posts. or any information disclosureOne of the primary objectives of the patent system. In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought. Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection. (prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed.) statement. This is essentially a placeholder for a later-filed non-provisional application. The non-provisional application must be filed no later than one year after the provisional application in order to be treated as being filed on the provisional filing date.
prosecution	Patent prosecutionPatent prosecution is the process of applying for a patent, along with any further proceedings before the USPTO. is the process of applying for a patent, along with any further proceedings before the USPTOUnited States Patent and Trademark Office. See also PTO..
pro se	Latin term used to refer to an individual who represents himself in a legal matter. Patent applicants do not have to use a patent agent or attorney but can prosecute a patent application on their own.
privateer	A patent assertion entity (PAEPatent Assertion Entity. A narrower term for trolls that focuses on the core business model rather than whether the entity is actually making use of the patented technology ("working the patent").) used indirectly by a producing entity to assert patents against rivals. The privateerA patent assertion entity (PAE) used indirectly by a producing entity to assert patents against rivals. The privateer is better positioned to damage the rival because it is not vulnerable to counterassertions (as a non-producing entity it cannot be liable for patent infringement) and need not be concerned with adverse publicity. The producing company may spin off the privateer, sell is better positioned to damage the rival because it is not vulnerable to counterassertions (as a non-producing entity it cannot be liable for patent infringement) and need not be concerned with adverse publicity. The producing company may spin off the privateerA patent assertion entity (PAE) used indirectly by a producing entity to assert patents against rivals. The privateer is better positioned to damage the rival because it is not vulnerable to counterassertions (as a non-producing entity it cannot be liable for patent infringement) and need not be concerned with adverse publicity. The producing company may spin off the privateer, sell, sell it patents, or support it in other ways. See Ewing, Indirect Exploitation of Intellectual Property Rights By Corporations and Investors: IP Privateering and Modern Letters of Marque and Reprisal.
prior art	Prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. is the knowledge in the field of a patent that was publicly available before the patent was filed.

Term	Definition
RAND	Reasonable and Non-Discriminatory. See FRAND"Fair, Reasonable, and Non-Discriminatory" licensing. A licensing commitment made for standard-essential patents in the context of technology standard setting activities. See also RAND..
RCE	Request for Continued Examination. First established by the AIPAAmerican Inventors Protection Act of 1999. The AIPA made minor changes to patent law, including requiring publication of most patent applications after 18 months and promoting the USPTO Director to Under Secretary of Commerce for Intellectual Property., RCEs enable a patent applicant to extend his or her efforts to obtain the patent after final rejection of the application by the examiner. By paying a fee and filing an RCERequest for Continued Examination. First established by the AIPA, RCEs enable a patent applicant to extend his or her efforts to obtain the patent after final rejection of the application by the examiner. By paying a fee and filing an RCE, an applicant can start over. There is no limit to the number of RCEs that an applicant can file., an applicant can start over. There is no limit to the number of RCEs that an applicant can file. Like continuations, RCEs have been criticized for allowing applicants to wear down examiners, and for creating backlog at the USPTOUnited States Patent and Trademark Office. See also PTO.. Notably, the patent bar resisted efforts by the USPTOUnited States Patent and Trademark Office. See also PTO. to reform continuationA second application for the same invention claimed in a prior nonprovisional application and filed before the first application becomes abandoned or granted. Continuations are unique to the U.S. and are criticized for giving applicants endless opportunity to wear down patent examiners. See Lemley and Moore, Ending the Abuse of Continuation Practice. and RCERequest for Continued Examination. First established by the AIPA, RCEs enable a patent applicant to extend his or her efforts to obtain the patent after final rejection of the application by the examiner. By paying a fee and filing an RCE, an applicant can start over. There is no limit to the number of RCEs that an applicant can file. abuse between 2007 and 2009.
reexamination	The process by which the USPTOUnited States Patent and Trademark Office. See also PTO. conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be “substantial new questions of patentability” presented as to the previously issued patent. Sometimes abbreviated “RE.”
RF	Royalty-Free. A standard that can be implemented without payment of any kind, or commitment to license a patent for implementation in a standard with no payment required.

Term	Definition
stick licensing	See ex post licensing
submarine patent	Prior to a reform that changed the patent term to 20 years from filing, a patent was active for 17 years from the date it issued. During this period, patent applications were not published. By delaying the issue date of a valuable patent, an applicant could wait until an industry had developed and only then let the patent issue. The industry would then be vulnerable to massive extortion. These hidden patents are colloquially known as “submarine patents.” The most famous holder of submarine patents is probably Jerome Lemelson.
SEP	Standard-Essential Patent. A patent that a participant in standards development process declares to be essential to the practice of the standard.
SCP	Standing Committee on Patents. The committee of the World Intellectual Property Organization (WIPOWorld Intellectual Property Organization. A UN treaty organization based in Geneva that seeks to harmonize international protection of intellectual property.) with jurisdiction over patent law, including the PCTPatent Cooperation Treaty, a treaty administered by WIPO. See international application..
software patent	A generalized term referring to patents whose subject matter extends to computer-implemented code, which have been the subject of great controversy, including but not limited to how they interact with open source software. Although software patents are often denigrated, there is no accepted definition. However, there are a variety of methods for identifying software patents for empirical analysis. See Bessen, A Generation of Software Patents.
specification	The section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the “person having ordinary skill in the art” to reproduce and use the invention without undue experimentation. A patent’s claims are interpreted in light of the specificationThe section of a patent that provides a description of the invention and the manner and process of making and using it. It must enable the "person having ordinary skill in the art" to reproduce and use the invention without undue experimentation. A patent's claims are interpreted in light of the specification..
State Street	A highly controversial 1998 decision by the Court of Appeals for the Federal CircuitSee CAFC that summarily abolished the longstanding rule against patents for methods of doing business.

Term	Definition
TRIPS	The Agreement on Trade-Related Aspects of Intellectual Property, an annex to the World Trade Organization (WTOThe World Trade Organization, a treaty organization launched in 1994 as a more formal and effective follow-on to the General Agreement on Trade and Tariffs (GATT). See also TRIPS.) Agreement of 1994. TRIPSThe Agreement on Trade-Related Aspects of Intellectual Property, an annex to the World Trade Organization (WTO) Agreement of 1994. TRIPS established minimum standards for intellectual protection that is generally perceived to reflect the interest of developed economies in exporting more robust protection for intellectual property rights. established minimum standards for intellectual protection that is generally perceived to reflect the interest of developed economies in exporting more robust protection for intellectual property rights.
troll	An entity in the business of being infringed — by analogy to the mythological trollAn entity in the business of being infringed — by analogy to the mythological troll that exacted payments from the unwary. Cf. NPE, PAE, PME. See Reitzig and Henkel, Patent Trolls, the Sustainability of ‘Locking-in-to-Extort’ Strategies, and Implications for Innovating Firms. that exacted payments from the unwary. Cf. NPENon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More, PAEPatent Assertion Entity. A narrower term for trolls that focuses on the core business model rather than whether the entity is actually making use of the patented technology ("working the patent")., PMEPatent Monetization Entity. An alternative term for “troll”, “patent assertion entity” (PAE), and “non-practicing entity” (NPE), proposed by authors Feldman et al. in The America Invents Act 500: Effects of Patent Monetization Entities on US Litigation. The term it proffers as a label that the authors posit more captures the phenomena surrounding the monetizing patents in current practice.. See Reitzig and Henkel, Patent Trolls, the Sustainability of ‘Locking-in-to-Extort’ Strategies, and Implications for Innovating Firms.

TRIPS

The Agreement on Trade-Related Aspects of Intellectual Property, an annex to the World Trade Organization () Agreement of 1994. established minimum standards for intellectual protection that is generally perceived to reflect the interest of developed economies in exporting more robust protection for intellectual property rights.

troll

An entity in the business of being infringed — by analogy to the mythological that exacted payments from the unwary. Cf. , , . See Reitzig and Henkel, Patent Trolls, the Sustainability of ‘Locking-in-to-Extort’ Strategies, and Implications for Innovating Firms.

Term	Definition
USC	United States Code. The patent laws are in Title 35, so that Section 101 is referenced as 35 USCUnited States Code. The patent laws are in Title 35, so that Section 101 is referenced as 35 USC § 101. § 101.
USPTO	United States Patent and Trademark Office. See also PTOPatent and Trademark Office, informally used interchangeably with USPTO..
USTR	United States Trade Representative. An office in the Executive Office of the President responsible for negotiating and enforcing agreements on trade.
utility	An invention must useful to be patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature.. Very few inventions are invalidated as lacking utilityAn invention must useful to be patentable. Very few inventions are invalidated as lacking utility. Perpetual motion machines, for example, are typically found invalid for lacking utility.. Perpetual motion machines, for example, are typically found invalid for lacking utilityAn invention must useful to be patentable. Very few inventions are invalidated as lacking utility. Perpetual motion machines, for example, are typically found invalid for lacking utility..
utility patent	As distinguished from design patents and plant patents. Generally, references to ‘patents’ are to utilityAn invention must useful to be patentable. Very few inventions are invalidated as lacking utility. Perpetual motion machines, for example, are typically found invalid for lacking utility. patents.

Term	Definition
WIPO	World Intellectual Property Organization. A UN treaty organization based in Geneva that seeks to harmonize international protection of intellectual property.
WTO	The World Trade Organization, a treaty organization launched in 1994 as a more formal and effective follow-on to the General Agreement on Trade and Tariffs (GATT). See also TRIPSThe Agreement on Trade-Related Aspects of Intellectual Property, an annex to the World Trade Organization (WTO) Agreement of 1994. TRIPS established minimum standards for intellectual protection that is generally perceived to reflect the interest of developed economies in exporting more robust protection for intellectual property rights..

WIPO

World Intellectual Property Organization. A UN treaty organization based in Geneva that seeks to harmonize international protection of intellectual property.

WTO

The World Trade Organization, a treaty organization launched in 1994 as a more formal and effective follow-on to the General Agreement on Trade and Tariffs (GATT). See also .

Basics

FAQ

What is a patent troll?

What is a non practicing entity (NPE)?

What is a patent assertion entity (PAE)?

What is privateering?

What is the Federal Circuit?

What is the International Trade Commission?

What are the different types of patents?

Patent Dictionary

337 action

abstract idea

[patent] agent

aggregator

AIA

AIPA

AIPLA

APJ

assign

best mode

BPAI

business method patent

CAFC

carrot licensing

CFR

claim construction

classification

combination patent

covered business method (CBM) review

continuation

DOC

doctrine of equivalents

declaratory judgment

defensive publication

dependent claim

design patent

direct infringement

disclosure

divisional application

EPO

evergreening

ex parte

ex post licensing

exclusion order

Fed. Reg.

Federal Circuit

file wrapper

final office action (rejection)

forum shopping

FR

FRAND

FRCP

FTC

Holdup

ICT

IFW

independent claim

indirect infringement

Intellectual Ventures

inter partes reexamination

inter partes review

interference

international application

JPO

Markman hearing

MPEP

MAD

maintenance fees

non-obviousness

novelty

NPE

post-grant review

publication

PTO

PTAB

provisional patent application

prosecution

pro se

privateer

prior art